Ex Parte KovacevichDownload PDFPatent Trial and Appeal BoardDec 6, 201311765430 (P.T.A.B. Dec. 6, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/765,430 06/19/2007 Ian D. Kovacevich 1702.012.05 7462 64935 7590 12/06/2013 TILLMAN WRIGHT, PLLC P.O. BOX 49309 CHARLOTTE, NC 28277-0076 EXAMINER LEWIS, JUSTIN V ART UNIT PAPER NUMBER 3725 MAIL DATE DELIVERY MODE 12/06/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte IAN D. KOVACEVICH ____________ Appeal 2012-001134 Application 11/765,430 Technology Center 3700 ____________ Before JENNIFER D. BAHR, JOHN C. KERINS, and STEFAN STAICOVICI, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-001134 Application 11/765,430 2 Ian D. Kovacevich (Appellant) seeks our review under 35 U.S.C. § 134(a) of the rejections of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). The rejections of claims 1-20 are reversed. RELATED APPEALS Appellant has identified Application Serial Nos. 11/425,139 and 12/359,521, currently on appeal under Appeal Nos. 2012-000186 and 2012- 000394 respectively, as related appeals which may be related to, directly affect or be directly affected by or have a bearing on, the Board’s decision in the present appeal. The present application does not claim priority to either of the foregoing applications. THE INVENTION Appellant’s invention is directed to an apparatus and method for protecting a layout of loose elements of a draft scrapbooking page. Independent claim 1, reproduced below, is representative of the claimed subject matter: 1. An apparatus for protecting a layout of loose elements of a draft scrapbooking page, the apparatus including, a flat work surface dimensioned to receive thereon a scrapbooking page, and an overlay dimensioned to cover the scrapbooking page, wherein the overlay is magnetically cohered to the work surface when the overlay is placed over the work surface in covering disposition to a scrapbooking page, including scrapbooking elements loosely placed on such scrapbooking page, located between the overlay and the work surface, the improvement characterized in that, Appeal 2012-001134 Application 11/765,430 3 the apparatus includes, under the work surface, an array of more than a dozen magnets by which the overlay is cohered to the work surface as a result of magnetic force of attraction between the magnets of the array and the overlay. THE REJECTIONS Appellant appeals from the following rejections: (i) claims 1-5, 8-13 and 15-20 under 35 U.S.C. § 103(a) as unpatentable over Lee et al. (US 7,234,259 B2, issued June 26, 2007); (ii) claims 6 and 7 under 35 U.S.C. § 103(a) as being unpatentable over Lee in view of Gordon (US 2005/0001420 A1, published Jan. 6, 2005); and, (iii) claim 14 under 35 U.S.C. § 103(a) as being unpatentable over Lee in view of Moor et al. (US 6,626,601 B1, issued Sep. 30, 2003). ANALYSIS 1. Claims 1-3, 5, 8-13, and 17--Obviousness--Lee Appellant presents claims 1-3, 5, 8-13, and 17 under a first heading in the Appeal Brief. App. Br. 8. Claim 1 is an independent claim and claims 2, 3, 5, 8-13 and 17 depend either directly or indirectly from claim 1. Independent claim 1 recites an apparatus for protecting a layout of loose elements of a draft scrapbooking page having an overlay that is magnetically cohered to a work surface when the overlay is placed over the work surface, with “the improvement characterized in that” the apparatus includes an array of more than a dozen magnets under the work surface by which the overlay is cohered to the work surface as a result of magnetic Appeal 2012-001134 Application 11/765,430 4 force of attraction between the magnets of the array and the overlay.1 According to the Examiner, Lee discloses an overlay that is magnetically cohered to a work surface when the overlay is placed over the work surface. More specifically, the Examiner’s position is that when the first planar sheet 110 covers the second planar sheet 120 in the manner shown in Lee Figure 6B, first planar sheet 110 (overlay) is magnetically cohered to the second planar sheet 120 ( work surface) via door assembly 150, with its magnets 620 and 630. Ans. 11. The Examiner acknowledges that Lee fails to specifically disclose the use of more than a dozen magnets, but maintains that “where the general condition of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation,” citing to In re Aller, Lacey, and Hall, 220 F.2d 454, 456 (CCPA 1955). Ans. 5. In response, Appellant argues that the first and second planar sheets in Lee are not configured to be magnetically cohered together. App. Br. 11. Instead, Appellant urges, they are permanently attached together via walls 130, 140 and 160. Id. We agree with Appellant that Lee does not disclose magnets 620, 630 that cohere the first planar sheet 110 (overlay) to the second planar sheet 120 (work surface). Rather, the magnets are situated to connect the surface 152 of door assembly 150 to the end 144 of wall 140. Lee col. 6, ll. 51-58, Figs. 3 and 6B. In view of the foregoing, we find that the Examiner’s rejection of claim 1 is lacking in sufficient rational underpinnings and therefore, the 1 Claim 1 appears to be set forth in Jepson format, albeit, there is no indication that the Examiner acknowledged it as such. Appeal 2012-001134 Application 11/765,430 5 rejection of claim 1, and of claims 2-3, 5, 8-13, and 17, which depend directly or indirectly from claim 1, as being unpatentable over Lee, is not sustained. 2. Claims 4, 15 and 16--Obviousness--Lee In sections B. – D. of the Appeal Brief, Appellant argues against the rejection of claims 4, 15 and 16. App. Br. 11-13. Inasmuch as claims 4, 15 and 16 depend from claim 1, for the same reasons the rejection of claim 1 over Lee was not sustained in section 1 above, the rejection of claims 4, 15 and 16 is also not sustained. 3. Claims 18-20--Obviousness--Lee In section E. of the Appeal Brief, Appellant presents arguments in favor of claims 18-20. App. Br. 14. Claim 18, is an independent claim and, claims 19 and 20 depend from claim 18. Claim 18 covers a method of securing an arrangement of loose elements of a draft scrapbooking page, “the improvement characterized” in that the apparatus includes, under the work surface, an array of more than a dozen magnets by which the overlay is cohered to the work surface as a result of magnetic force of attraction between the magnets of the array and overlay.2 In rejecting claim 18, the Examiner relies upon the same interpretation of the cited reference as applied to independent claim 1. Ans. 4-5, 8-9, 13. Appellant similarly reasserts the arguments offered with regard to claim 1 in opposition to the rejection of claim 18. App. Br. 14. For the same reason the rejection of claim 1 over Lee was not 2 Claim 18 also appears to be set forth in Jepson format and, there is no indication that the Examiner acknowledged it as such. Appeal 2012-001134 Application 11/765,430 6 sustained in section 1 above, the rejection of claim 18, and of claims 19 and 20 which depend from claim 18, is also not sustained. 4. Claims 6-7--Obviousness--Lee and Gordon Claims 6 and 7 depend indirectly from claim 1. In rejecting claims 6 and 7, the Examiner relies upon the same interpretation of the cited Lee reference as applied to claim 1. Ans. 9-10, 13. Appellant also reasserts the arguments offered with regard to claim 1 in opposition to the rejection of these claims. App. Br. 14. Inasmuch as the Examiner does not rely on Gordon to cure the deficiencies in Lee (discussed in section 1 above), the rejection of claims 6 and 7 is not sustained. 5. Claim 14--Obviousness--Lee and Moor Claim 14 depends indirectly from claim 1. In rejecting claim 14, the Examiner relies upon the same interpretation of the cited Lee reference as applied to claim 1. Ans. 10, 13. Appellant also reasserts the arguments offered with regard to claim 1 in opposition to the rejection of claim 14. App. Br. 14-15. Inasmuch as the Examiner does not rely on Moor to cure the deficiencies in Lee (discussed in section 1 above), the rejection of claim 14 is not sustained. DECISION The decision of the Examiner to reject claims 1-5, 8-13, and 15-20 under 35 U.S.C. § 103(a) as being unpatentable over Lee is reversed. The decision of the Examiner to reject claims 6 and 7 under 35 U.S.C. § 103(a) as being unpatentable over Lee in view of Gordon is reversed. Appeal 2012-001134 Application 11/765,430 7 The decision of the Examiner to reject claim 14 under 35 U.S.C. § 103(a) as being unpatentable over Lee in view of Moor is reversed. REVERSED Vsh Copy with citationCopy as parenthetical citation